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Trade Marks

Hong Kong is known as the shopping paradise and a trend-setting city for fashions, luxury goods and technology gadgets. Consumers from mainland China and overseas come to Hong Kong to look for the newest release from the fashion brands and the most updated products in the industry. Consumers are confident in the products sold in Hong Kong being genuine products and sold at a reasonable price. It is therefore increasingly important for brand owners to take measures to ensure that their brand name is protected from being copied or used by third parties for unlawful reasons which may be detrimental to the reputation and value of the brand.

ONC’s Intellectual Property team offers strong trade mark services, ranging from trade mark clearance searches and registrability advice, planning and drafting application strategies, monitoring services, and trade mark portfolio management, which includes advising on application and registration, opposition, and revocation or cancellation proceedings.

  •     Trade Mark Search and Registration

We conduct trade mark searches for individuals and companies, which help identify whether a mark is identical or similar to any existing and registered marks in the relevant classes. This enables effective assessment on the chance of successful registration before an application is filed. 

  •     Trade Mark Application in Hong Kong and Worldwide

We are a member of the International Trademark Association (INTA) which shares an international network of IP lawyers. This enables us to provide and coordinate professional services in various jurisdictions. We are experienced in prosecuting Hong Kong and worldwide trade mark applications, including both conventional and unconventional trade marks such as slogan marks, certified marks and 3-D marks.  

  •     Representation of Clients in Opposition and Invalidation Hearings

Our ability to handle and represent clients in trade mark opposition and invalidation proceedings is widely acknowledged. We have successfully opposed and invalidated numerous trade mark registrations in Hong Kong, including many famous marks which were registered in bad faith.  

  •     Trade Mark Monitoring

Trade mark monitoring can help protect the ownership of the clients’ name or logo.  We will alert clients when any potentially similar application is filed, and our lawyers would also advise the best solution to tackle trade mark infringement activities in the markets. 

  •     Trade Mark Portfolio Management

We provide trade mark portfolio management service to ensure that our clients’ portfolios are in good order, i.e. correct ownership, registrations, renewals, recording assignments, monitoring and enforcement.  We always provide the best strategy to help our clients represent, maintain and protect their trade marks. 

  •     Trade Mark Enforcement, Dispute and Litigation

We represent clients in enforcement of their trade mark rights against any infringement. For example, we obtain court injunctions that require infringing companies to change their company names if they incorporate our clients’ registered trade marks. Trade mark infringement incurs both civil and criminal consequences. We further protect our clients’ marks by filing complaints to the Customs and Excise Department where necessary. 

  •     Trade Mark Squatting

Trade mark squatting is becoming more and more common in Hong Kong.  Squatters usually identify trade marks of rising brands in Europe and the US that have yet to become popular in Hong Kong, and register such marks with the aim of selling them back to the legitimate owners at high prices to make profit. Recently, well-known PRC marks have also become targets of trade mark squatters. Early registration of a trade mark by the brand owner is therefore the most effective way to protect it from trade mark squatting. 

  •     China Trade Marks

Our Intellectual Property Department offers a wide array of services in the PRC, including both contentious and non-contentious IP work.

We assist our clients in a wide array of IP services, including the registration, exploitation and protection of their intellectual property rights in copyright, trade marks, patents, registered designs, rights in confidential information and other related legal rights, brand management, IP transactions etc.

We also have experience assisting clients in filing administrative and civil complaints for trade mark infringement and passing off, liaising with relevant government authorities for conducting raid actions, and also assisting clients in obtaining recordation with the PRC customs, as well as assisting in customs actions. 

We represent some of the most world-renowned brands in various industries such as media/entertainment, luxury goods, high fashion, jewellery, electronics and consumables products etc., including brands that have been identified as the World’s Most Valuable Brands by Forbes and Interbrand. 

We value the trust our clients place in us, and assist all of our clients, be it local or international, to actively protect and defend their brand names.

Examples of our work include:

  • Advising a well-known PRC apparel brand on trade mark oppositions in the Asia-Pacific region;
  • Managing the worldwide portfolio of a well-known portfolio tobacco company, including applications and enforcement in over 80 countries and regions in the world;
  • Managing the trade mark portfolio of a globally renowned Hong Kong actor and director, including trade mark clearance, prosecution and enforcement in Hong Kong and PRC;
  • Advising a Chinese multinational technology company on trade mark clearance and providing advice on trade mark portfolio management strategy;
  • Managing the trade mark portfolio of two Hong Kong real estate agencies, including advising on trade mark protection, applications and oppositions;
  • Advised a subsidiary of a London-based multinational insurance company regarding trade mark and copyright-related matters in multiple jurisdictions;
  • Advised a multinational fashion and accessories manufacturer of French origin in trade mark, patent, design and copyright-related matters in Hong Kong and China;
  • Filed and prosecuted trade marks on a global basis for a French fashion brand;
  • Acted for a French fashion brand in opposing and cancelling over 100 trade marks in China and Hong Kong;
  • Acted for a French fashion brand in trade mark enforcement, filing name complaints with the Companies Registry, and obtaining court judgments against over 50 Hong Kong companies with infringing names;
  • Acted for numerous international fashion, jewelry and accessories brands in opposing, revoking and invalidating trade marks in Hong Kong;
  • Filed and prosecuted trade marks for the largest Hong Kong courier company with business in China and South East Asia
  • Acted for the world’s largest power-tool company in opposing trade marks in China;
  • Filed and prosecuted trade marks for the world’s largest smart phone company and another leading smart phone company in the Greater China Region;
  • Assisted the world’s largest multinational power tool company in enforcing patent and trade mark rights, successfully stopped patent infringement in China;
  • Acted for numerous PRC companies listed in Hong Kong and/or China, including state-owned and private enterprises, in opposing, revoking and invalidating trade marks in Hong Kong, filing name complaints with the Companies Registry, and obtaining court judgments against Hong Kong companies with infringing names;
  • Acted for numerous Hong Kong and foreign listed companies in filing and prosecuting trade mark applications;
  • Acted for a Bordeaux Premier Grand Cru awardee wine estate in opposing, revoking and invalidating trade marks in Hong Kong, filing name complaints with the Companies Registry, and obtaining court judgment against Hong Kong companies with infringing names;
  • Acted for a Hong Kong-listed leading provider of financial information services and money lender, in opposing and cancelling trade marks in China;
  • Advised listing applicants on trade mark-related matters in initial public offerings on The Stock Exchange of Hong Kong Limited and pre-IPO re-organisations; and
  • Advised a major statutory body in Hong Kong from time to time in trade mark and copyright-related matters in Hong Kong and in its co-operation with overseas business partners.

If you would like to know more about our intellectual property practice or how we can help your business, please contact us at (852) 2810 1212 or at ip@onc.hk.

Please refer to our articles in ‘Knowledge’

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